The Briefing by Weintraub Tobin

Punchbowl News won the trademark infringement lawsuit filed by greeting card and event planning company, Punch Bowl Inc., despite a previous setback at the Ninth Circuit. Scott Hervey and Jamie Lincenberg discuss this recent development in this installment of The Briefing.     Cases Discussed: Rogers V. Grimaldi Jack Daniels Properties Inc. Versus VIP products Punchbowl, Inc. V. Aj Press, Llc Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: Despite a 2022 setback at the Ninth Circuit, Punch Bowl News ultimately came out a winner in a trademark infringement lawsuit bought by a greeting card and event planning company, Punch Bowl Inc. I’m Scott Hervey from Weintraub Tobin, and today I’m joined by Jamie Lincenberg. We are going to talk about this case again and the future of trademark infringement cases in light of the recent changes to the applicability of the Rogers Test on this next installment of The Briefing. Jamie, welcome back to The Briefing. Jamie: Thank you, Scott. It’s nice to join you here again. Scott: Do you remember talking about this case in 2022 when we covered the appeal to the Ninth Circuit? Jamie: I sure do. Yeah. Scott: I think it’s good to give some closure to this case since we already covered it. Why don’t Let me start with the case? Punchbowl Inc. Is an online technology company whose product is online invitations and online greeting cards. It has been using the mark Punchbowl since 2006, and it has a federal trademark registration covering the mark. AJ Press was founded by two journalists who used to write for Politico. AJ Press operates Punch Bull News, a subscription-based online news publication that covers in American government and politics. Given the publication’s focus on federal politics, AJ Press chose Punch Bowl because that’s the nickname the Secret Service uses to refer to the US Capitol. It makes sense if you think about the capital turned upside down. It looks like a Punch Bowl. The title Punch Bowl News was selected to elicit the theme and geographic location of the publication. Punch Bowl, the technology company, sued for trademark infringement, and the district court granted AJ Press’s motion to dismiss on the grounds that their use of punch bowl did not give rise to liability under the Rogers test because it constituted protected expression, and it was not expressly misleading as to its source. Jamie: So, I think we should revisit the Rogers test. Scott: Yeah, let’s do that. Jamie: The Rogers test comes from the 1989 Second Circuit case of Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. In that case, the district Court and the Second Circuit on Appeal both said, the use of a third-party mark in an expressive work does not violate the Lanham Act if the title has artistic relevance to the underlying work, and if it has some artistic relevance, that it’s not explicitly misleading as to the source of the content of the work. This then became known as the Rogers Test. Scott: Applying the Rogers Test, the lower court and the Punch Bowl case dismissed trademark claims, and the Ninth Circuit upheld the lower court’s dismissal. However, in the weeks following the Ninth Circuit’s opinion, the Supreme Court granted cert for Jack Daniels Properties Inc. Versus VIP products, otherwise known as the Squeaky Dog Toy case. The Ninth Circuit stayed its original decision in the Punch Bowl case to wait the Supreme Court’s decision. Now, the Jack Daniels Properties versus VIP Products dispute involved the claim by Jack Daniels that this dog toy, Bad Spaniels, infringed a number of Jack Daniels trademarks. At the district Court and on appeal at the Ninth Circuit, the issue in the Jack Daniels case was framed as to whether the dog toy was an expressive work since trademark claims involving expressive work are analyzed under the Rogers test. On appeal, however, the Supreme Court said that the issue really was not whether the dog toy is an expressive work or not an expressive work, but rather the nature of the use of the Jack Daniels marks. The Supreme Court found that VIP’s use of the marks, while humorous, were for the purpose of serving as a source identifier, so trademark use. The Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it is also used to perform some expressive function. Jamie: Subsequent to the Supreme Court’s holding in Jack Daniels, the Ninth Circuit then vacated its original ruling in the Punch Bowl case and then held that the Rogers test doesn’t apply to this case because AJ Press uses Punch Bowl to identify its news product. The Ninth Circuit said, to the extent that any previous cases held that Rogers applies when an expressive mark is used as a mark and that the only threshold for applying Rogers was an attempt to apply the Lanham Act to an expressive work, that those cases are incorrect and are no longer good law. Scott: So, under Jack Daniels because A. J. Press used Punch Bowl as a trademark, regardless of the fact that there is an expressive purpose for the use of Punch Bowl and that its use is not expressly misleading, the Rogers test is not going to be applied here. The Court sent the case back to the district Court, the Ninth Circuit sent the case back to the District Court with instructions to analyze the case under the Ninth Circuit’s Sleekcraft Test. That’s the test that’s used in the Ninth Circuit for determining trademark infringement. The court was going to examine punch bowls, or AJ Press’s use of punch bowl under the Sleekcraft factors, which are the strength of the mark, the proximity or relatedness of the goods, the similarity of the marks, evidence of factual confusion, the marketing channels used by the parties, the degree of consumer care in selecting the products, and the defendant’s intent, and any likelihood of expansion by the plaintiff into the space operated in by the defendant. Those are the tests for determining likelihood of confusion. They’re used in the Ninth Circuit, and similar versions of the Sleekcraft test are used in other districts throughout the United States. Jamie: The District Court, in finding no likelihood of confusion, seem to focus on the second and fifth factors that you just mentioned. Scott: Right, I agree. So, with regard to the second factor, the court found that the goods sold by the parties are not approximate, they’re not related, they’re not complementary, and they don’t function similarly. A platform offering tools for online party planning is not at all related to a news publication that focuses on politics. Also relevant to this point was the court’s finding that the products are not sold to the same class of purchasers. Jamie: The fifth factor is naturally related to the second factor. The more the products are related the more likely they are to have overlapping marketing channels. Now, interestingly, the court rejected the fact that both companies do use the internet as a marketing channel as evidence of overlapping marketing channels. The Court noted that almost all commercial retailers use the internet, and the shared use of a ubiquitous marketing channel is not evidence of the similarity contemplated by Slate Craft. In today’s world, the shared use of online marketing is not enough to constitute overlapping marketing channels, and a more specific level of overlap is going to be required. Scott: The dissimilarity in the goods and the lack of proximity between the goods, along with a failure to point out an overlapping discrete marketing channel, really carried the day. Now, the court called this result an obvious It stated that no reasonable consumer would purchase a subscription to a party planning software platform when they really intended to subscribe to a political news website. Do you agree with that? I agree with that. Jamie: I think that I would agree. I would agree with the court and say that this is an obvious decision. But Scott, what do you think the real takeaway is here? Scott: Yeah. I mean, a couple of takeaways. One is that even though Rogers was not applicable here, just like it’s not applicable in the squeaky dog toy case, the Jack Daniels case versus VIP products case, that’s not the end of the inquiry. We still need to go through the analysis of the sleep craft factors and really determine whether or not there is a likelihood of confusion. So, the fact now that Rogers might not be available to certain defendants really isn’t the end of the inquiry. Also, plaintiffs who know that the Rogers test is not available to a defendant, that’s not a victory either. It’s an interesting case. I’m glad we saw the result of this case, even though there was a loss of the Ninth Circuit. I think the result was one that we all thought should happen. Jamie: Yeah, I’m glad we were able to circle back and close the loop. Get some closure for the audience. Scott: Yeah. Well, thanks for joining me, Jamie. Jamie: Thanks, Scott. Scott: Thank you for joining us for today’s episode of The Briefing. We hope you found this episode informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.

Scott Hervey, a legal expert on copyright issues, and Tara Sattler, a seasoned legal professional, dive into the implications of the court ruling in Hayden v. 2K Games, Inc. They analyze how this decision might signal the end of tattoo copyright cases, particularly how implied licenses come into play for public figures like LeBron James. The conversation covers the complexities of copyright in media and the need for clear consent regarding tattoo use, shedding light on the evolving legal landscape surrounding artistic rights in gaming and entertainment.

A New York Judge dismissed former Rep. George Santos’ lawsuit against Jimmy Kimmel Live over the late-night host’s use of personalized Cameo videos in one of his segments. Scott Hervey and Tara Sattler discuss this decision on this installment of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: I can see the situation unfolding in the writer’s room for Jimmy Kimmel Live. How can they show that former US Representative George Santos would say just about anything for money and have that be extremely funny? The resulting prank video skit got a bunch of laughs and a copyright lawsuit. However, a recent decision by the US District Court for the Southern District of New York ended Santos’ lawsuit. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague Tara Sattler, to discuss this case and its implications on the television and media industry on today’s installment of the briefing. Tara, welcome back. It’s great to have you. Tara: Thanks, Scott. I’m glad to be here. Scott: Tara, by chance, have you seen these George Santos cameo videos? Tara: I have, and they really are quite hilarious. Scott: Yeah, they are. I could see why the writers for Jimmy Kimmel Live pitch this. But why don’t you give our listeners a quick summary of the facts? Tara: Certainly, this case stems from George Santos creating personalized videos on the Cameo platform after he was expelled from Congress. Jimmy Kimmel and his show created fake cameo accounts and requested 14 absurd videos from Santos, which they received and then aired on Jimmy Kimmel Live as part of a segment called Will Santos Say It? As part of the segment, Kimmel made jokes about Santos, including about his federal wire fraud case to which Santos pled guilty. Now, the Cameo terms of service say that the talent, who in this case would be Santos, owns the copyright in the video. Cameo offers two types of to the user who requests the video. However, both licenses specifically exclude television exploitation. Scott: Right. If you’re Santos, you’re thinking, I own the copyright, and the license granted to the account owner specifically excludes television. So, of course, Santos, Seuss, Kimmel, ABC, and Disney for copyright infringement and a couple of related claims. Disney and the rest of the defendants moved to dismiss, arguing that their use of the videos constituted fair use. The court granted the defendant’s motion to dismiss. The key issue was whether Kimmel’s use of the videos qualified as fair use under copyright law. Now, as we know, Tara, because you and I have done a lot of podcasts on the Andy Warhol Foundation Supreme Court case, this case is post-Warhol, which essentially tightened up fair use, where the focus is on the purpose of the use and whether purpose justifies the copying. Tara: True. We recall that the Supreme Court in Warhol specifically called out criticism as a purpose that justifies copying. Scott: That’s exactly what the defendant said and what the court relied on in finding fair use. The court said that Kimmel’s use was clearly for the purpose of criticism and commentary on a newsworthy public figure. The court emphasized that Kimmel was using the videos to criticize Santos’s willingness to say absurd things for money shortly after being expelled from Congress for, albeit fraudulent activity. The court saw this as political commentary that did supersede the original purpose of the videos. Tara: There was some interesting discussion about the fake accounts that late-night showwriters used to solicit these videos. The court acknowledged that Kimmel’s conduct may have been deceptive, but that doesn’t matter for fair use purposes. Sources. They cited Warhol for the fact that fair use is an objective inquiry into how the work is used, not the subjective intent or good faith of the user. So, while Kimmel’s methods may have been questionable, that didn’t negate the transformative nature of how the videos were ultimately used on his show. Scott: Now, as for the other fair use factors, the court found the second factor, the nature of the copyrighted work, that weighed slightly against fair use as the videos had some creative elements. However, the court said that this factor rarely plays a significant role. A bit more interesting is the court’s treatment of the third factor, the amount and substantiality of the work used. Despite the fact that Kimmel used the full video, the court found this factor was neutral. The court said that using the full video was reasonable given the transformative purpose. Tara: That is really interesting. Generally, where the full work is used, that actually tends to weigh against the third fair use factor. Scott: Right, that’s true. We’ve seen that before. But here the court said, the use of the videos to criticize and comment on a public figure would have been undermined by showing less than the entirety of the videos because the audience would not know whether Santos had indeed said everything in the request. So I can certainly see this portion of the opinion being cited in future fair use arguments. Tara: I think you’re right, Scott. For the fourth factor, effect on the market, Santos had a unique claim. He claimed that the defendant’s use devalued the market for cameo videos, including Santos’s, by undermining the integrity of the cameo platform. Scott: That’s right. He did say that, but the court didn’t buy it. The court found no evidence of harm to the market for Santos’s videos beyond the critical use at issue. The court also emphasized the public benefit of allowing criticism and commentary. In reviewing all the factors, the court found fair use was so clearly established that they could dismiss the copyright claim at this very early stage. Tara: There are a few key takeaways from this case. First is that post-war hall, criticism and commentary remain a good way for establishing a successful fair use argument. If the defendant can show that the use has critical bearing on the original work, the use will likely be found to be transformative. Scott: The second is Santos’s status as a public figure and how that tied into the deceptive methods Kimmel used to obtain the videos. The opinion seems to imply that using deceptive methods to obtain content from public figures for commentary purposes may be viewed more favorably than similar tactics used on private individuals. Tara: I definitely think that the broader context of political commentary and public benefit played a big role in the court’s findings. This is something to consider. Defendants may have a stronger fair use argument when their content contributes to important public discussions. Scott: That’s true. Very true. Tara, thanks for joining us today. Tara: Thanks, Scott, for inviting me to join you today. And that’s all for today’s episode of The Briefing. Thank you also to the listener or viewer for tuning in. We hope you found this episode informative and enjoyable. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topic we covered today, please leave us a comment.

A group of senators introduced an update to the ‘No Fakes Act,’ which protects the voice and visual likeness of individuals from unauthorized AI-generated recreations. Scott Hervey and James Kachmar discuss the changes to this act on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here.   Show Notes: Scott: Senators Chris Coons, Marsha Blackburn, Amy Klobuchar, and Thom Tillis introduced an update to the ‘Nurture Originals Foster Art and Keep Entertainment Safe Act’ or the ‘No Fakes Act,’ which the four senators previously released last October. I’m Scott Hervey, and I’m joined today by James Kachmar, and we’re going to talk about the ‘No Fakes Act’ or the update to the ‘No Fakes Act’ on this installment of The Briefing. James, welcome back to The Briefing. It’s been a while. James: Good to see you, Scott. Thanks for having me. Scott: We have a fun one today, the ‘No Fakes Act.’ The purpose and intent of the ‘No Fakes Act’ is to prevent the creation and use of a digital replica of an individual without that person’s consent. Let’s dive into how this proposed act accomplishes this and what the liabilities are for violations of the act. First and foremost, the act creates a new federal property right to authorize the use of a person’s voice or visual likeness in what’s called a digital replica. Now, a digital replica is defined in the act as a newly created, computer-generated highly realistic electronic representation that is readily identifiable as the voice or visual likeness of an individual. Now, this right, the right to control a digital replica or grant rights in a the original replica, survives postmortem and is transferable, licensable, and exclusive to the individual, the executors, the heirs or licensees or devices of that individual for an initial ten years, renewable for a rolling five-year period with a cap of 70 years. That’s postmortem. As I said, this right is licensable. Interestingly, the act says that a license can only have a term of ten years. James: Okay, Scott, why don’t we look at what the essence of the act is? It basically creates liability for one, the production of digital replica without consent of the applicable right holder, and two, publishing, reproducing, displaying, distributing, or transmitting, or otherwise making available to the public a digital replica without the consent of the applicable right holder, where such acts affect interstate commerce. It is not a defense to liability if the defendant displayed or publicly communicated a disclaimer stating that the digital was unauthorized or generated through artificial intelligence. Liability requires actual knowledge through either the receipt of notice from the right holder or a person authorized to act on behalf of the right holder or an eligible plaintiff, or from the willful avoidance of actual knowledge that the material is an unauthorized digital replica. Scott: Now, the act allows for a private right of action by the rights holder, and it also allows for a private right of action by any other person that controls, including through a license, the right to exercise or the right to use the rights holder’s voice or likeness. The act is not clear whether this license needs to be exclusive in order to sue for a violation of the act, like under copyright or if it can be non-exclusive and still have the right to sue. James: The act also allows for a private right of action for record labels. In the case of digital replica involving either a sound recording artist who has entered into a contract for their exclusive sound recording artist services, or any artist who has entered into an exclusive license to distribute or transmit one or more of their album or works that capture their performance. This is similar to what you and I had talked about some time ago about Tennessee’s Elvis Act. Scott: Right, it is. James: There’s also a three-year statute of limitations period for bringing lawsuits for violations of the act. The act provides for monetary relief injunctive relief, punitive damages for a willful violation, as well as attorney’s fees. Scott: The act also establishes separate liability for online service providers that participate in the making of a digital replica, so take no generative AI service providers, or make a digital replica available on an online service unless the online service has taken reasonable steps to remove or disable access to the unauthorized digital replica as soon as it is technically and practically feasible for the online service actor acquiring actual knowledge that the material is an unauthorized digital replica. So similar to the DMCA, the Digital Millennium Copyright Act, the No Fakes Act establishes a notice and takedown process. Also similar to the DMCA, liability for false takedown notices under the No Fakes Act. James: That’s right, Scott. And there are some exclusions that are built into the act, which are based on recognized First Amendment protections. For instance, it’s not a violation of the act when a digital replica is used in a bonafide news, public affairs, or sports broadcast or account, if the digital replica is the subject of or materially relevant to the subject of the broadcast or account. Scott: And similarly, it will not be a violation of the act where a digital replica is of an individual that is portrayed in a documentary or in a historical or biographical manner. Now, this can include some degree of fictionalization unless the production or use is intended to and does, in fact, create the false impression that the work is an authentic work and that the person portrayed by the digital replica actually participated in the work. Whether on camera or through a sound recording. James: Right. Similar to what we see in the copyright field, it is also not a violation of the act where the digital replica is used consistent with the public interest, either in bona fide commentary, criticism, scholarship, or satire and parody, or if it is used in a fleeting or negligible manner. Lastly, it will not be a violation of the act if the digital replica is used in an advertisement or commercial announcement for any of the above examples. Scott: That’s interesting, right? That’s a mix of write-up publicity statutes and copyright. The bill also includes a safe harbor from liability for AI technology companies that create a technology product that creates digital replicas unless such product is, one, primarily designed to produce one or more unauthorized digital replicas, and two, has only limited commercially sufficient purposes for use other than to produce an unauthorized digital replica, or three, is marketed, advertised, or otherwise promoted by that person or another acting in concert with that person, with that person’s knowledge for use in producing an unauthorized digital replica. It’s going to be interesting to see if the Senate will pass this bill, given where we are now in the election cycle. Now, the Copyright Office has recently issued a report basically cautioning that there is an urgent need for new federal legislation to address the proliferation of deepfakes created through the use of artificial intelligence. The report, it’s a great report, and anybody who’s interested in the subject should read it. The report analyzed the existing legal framework through which digital replicas can be addressed and pointed out their shortcomings. Perhaps the Senate will take this bill under consideration sooner rather than later. James: Right, Scott. We’ll just have to wait and see what the Senate does with the No Fakes Act update, and maybe you and I can get back together for another podcast here soon on this topic. Scott: That’s all for today’s episode of The Briefing. Thank you, James, for joining us. Thank you, the listener or the viewer, for tuning in. We hope you found this episode to be informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please leave us a comment.  

The Trademark Trial and Appeal Board often consider wine, beer, and non-alcoholic beverages related when determining the likelihood of confusion despite there being no per se rule on the matter. Scott Hervey and Jamie Lincenberg discuss the TTAB’s long-standing opinion on this episode of The Briefing. Read Scott’s article on the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: In October 2014, I wrote an article for our law firm’s blog, remember those? That discussed the Trademark Trial and Appeal Board’s tendency to find wine, beer, and non-alcoholic beverages related for the purpose of determining likelihood of confusion. Now, the T-TAB has repeatedly said that there is no per se rule that all beverages are related for Section 2D refusal purposes. But really? Now, most consumers see wine, beer, and non-alcoholic beverages as unrelated products and would not believe, even if they shared a similar trademark element, like a similar word or design, that they’re related or that they emanate from the same source. However, the Trademark Trial and Appeal Board seems to always find otherwise. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague and frequent Briefing contributor, Jamie Lincenberg. I thought it would be interesting to revisit this topic ten years later. So today, we’re going to take an updated look at beer, wine, water, and likelihood of confusion on today’s episode of The Briefing. So, Jamie, welcome back. Jamie: Thank you, Scott. I’m happy to be here and to revisit this topic with you. Scott: Great. So, like all, one of the things I think the best place to start is at the beginning, and that’s with the 1992 decision in In re Saler Brew, Fron Salier. That case seems to be the first time that the Trademark Trial and Appeal Board showed that it was receptive to the argument that wine and beer are related for 2D likelihood of confusion purposes. In that case, the Trademark Trial and Appeal Board found that the marks Christopher Columbus for beer, confusingly similar to the mark Cristobal Cologne and Design for Sweet Wine. The T-TAB found persuasive third-party registrations introduced by the Trademark Examiner, showing that a number of companies have registered their marks for both beer and wine. Jamie: Following that case, the T-TAB adjudicated a number of non-precedential cases in which the T-TAB found beer and wine related. For example, in In Re Stone Street, LLC, the T-TAB found the mark Buckeye for wine, confusingly similar to the Mark Buckeye sparkling dry for beer. Similar to In Re Saylor Brow, the T-TAB found persuasive third-party registrations covering both beer and wine. The applicant in Stone Street argued that another federal circuit case regarding the Mumm champagne brand required a finding that beer and wine are not related. However, the T-TAB was not persuaded. The record in Mumm demonstrated the Mumm brand champagne to be a premium sparkling wine marketed by one of France’s top quality champagne producers. The record in Stone Street lacks any such distinction. Scott: Then, in 2011, the T-TAB issued a presidential opinion on the continuing conflict of beer and wine. Now, that case involved a refusal to register the Mark HP for wine based on the likelihood of confusion with the Mark HP and design for beer. The T-TAB found persuasive third-party registration submitted by the trademark examiner that covered both beer and wine, as well as third-party web pages for companies that make and sell both beer and wine. The T-TAB stated as follows: the third-party registration evidence and the website evidence together amply demonstrate the relatedness of beer and wine and show that consumers if they encounter both goods sold under confusingly similar marks, are likely to believe that they emanate from the same source. Jamie: Then 2013 was when the T-TAB began expanding the scope of goods related to wine and also likely beer to include water. In the case of Joel Gottwines versus Von Gott, the T-TAB addressed Gottwines’ opposition to Von Gott’s application for got light, for flat and carbonated drinking water, coconut water, and flavored mineral water, on the grounds that the applicant’s mark was confusingly similar to Joel Gott’s mark, Gott, G-O-T-T, for wine. Scott: Addressing whether there is a likelihood of confusion between Van Gott’s Mark and Joel Gott’s Mark, having found the marks similar, obviously, the court then focused on the relatedness of the goods, the trade channels, and the class of purchasers. First, the court noted that the goods need only be sufficiently related such that consumers would likely assume upon encountering the goods under similar marks that they originate from or are sponsored or authorized by or are otherwise connected to this same source. Now, the court found compelling the use of third-party registrations covering both water and wine that was submitted by Joel Gott. The court noted that the use-based third-party registrations have probative value in that they suggest that the goods listed therein are of a kind that may emanate from a single source. Joel Gott also introduced marketplace evidence demonstrating that wine and water are related goods. Joel Gott introduced testimony from a witness who purchased several different brands of water from different winery tasting rooms, each bearing the name of the winery at which the wines and water were being sold. The court found this evidence strongly favors a finding of likelihood of confusion with respect to the DuPont factors regarding the relatedness of the goods. Jamie: As to the channels of trade, Van Gaat contended that although both wine and water are sold in supermarkets, they’re sold in different sections of the store. Van Gaat argued that because goods both be sold in a large store such as a supermarket, would not alone be sufficient to show that consumers would be likely to encounter both in one shopping trip, or to assume a common source, merely because both types of goods can be found in such a store. However, the court found compelling evidence submitted by Joel Gott, which showed that wine and water are often sold in the same area of a store, as well as copies of online beverage menus from restaurant websites, showing that restaurants offer both water and wine for sale in that same menu section. Based on the evidence submitted by Joel Gott, the court found that wine and water are sold through the same trade channels, the same classes of customers. Scott: Now, here we are in 2022. Well, I guess here we are a couple of years ago in 2022, the case of In re Rockaway drinks. Even though it’s a non-precedential case, it seems to firmly establish that beer, wine, non-alcoholic beverages, including sparkling waters of any kind, are related for likelihood of confusion purposes. In that case, both marks included the term Rockaway, although the cited mark was Rockaway Brewing Company with Brewing Company disclaimed. The T-TAB said that because both marks begin with the identical term Rockaway, it is agreed that the marks are similar in sound, appearance, connotation, and commercial impression. Jamie: Now, turning to the relatedness of the good. The T-TAB evaluated whether non-alcoholic water-based beverages and beer are similar enough to cause confusion among consumers. The board referenced the DuPont factors, specifically the second and third factors, which deal with the similarity of the goods and the channels through which they’re sold. Scott: Whether the goods are related for likelihood of confusion purposes hinges on whether consumers could be led to believe that the products come from the same source, even if they are not identical or are not directly competitive. The T-TAB examined evidence of breweries that sell both beer and non-alcoholic beverages like soda and sparkling water under the same brand names. For example, brands like Appalachian Brewing Company and Saint Arnold not only offer craft beers but also root beers and sodas. That showed that the market often blurs the lines between alcoholic and non-alcoholic beverage offerings. Jamie: The board also considered third-party registrations, where trademarks were registered for both beer and various non-alcoholic beverages. This supported the idea that these products might be perceived as related by the public, increasing that likelihood of confusion. Ultimately, the T-TAB’s decision emphasizes that it’s not just the nature of the goods, but also how they’re marketed and perceived by consumers that can create a likelihood of confusion. Even distinct products like beer and sparkling water might be seen as related when they’re sold under similar branding in the same venues. Scott: Ten years later, it seems that the relatedness creep within the beverage category continues. I think it’s fair to say that all types of beverages, whether they be non-alcoholic sparkling water, energy drinks, canned soft drinks, beer or wine, would probably be considered related, at least by the Trademark Trial and Appeal Board when it comes to refusing registration for likelihood of confusion. Also, it’s a reminder that when it comes to trademark law, it’s not just about what you’re selling, but about how your goods are positioned in the marketplace. The boundaries between product categories are often more fluid than they appear, and this can have real implications for trademark disputes and your trademark registration application. Jamie: All beverages are certainly not related in my mind, but for trademark purposes, I do think that these positions make sense. Scott: Yeah, it’s an important thing to remember that sometimes, the way consumers see the relatedness of products is not necessarily the way the Trademark Trial and Appeal Board sees the relatedness of those same products. Jamie: Right. Thanks, Scott. Scott: That’s all for today’s episode of The Briefing. Thank you, the listener or the viewer, for tuning in. We hope you found this episode to be informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please leave us a comment.  

Scott Hervey, a trademark attorney, and Jamie Lincenberg, an expert in trademark law, discuss a pivotal ruling by the US Trademark Trial and Appeal Board regarding the trademark 'Gabby's Table.' They explore how this decision affects affiliate marketing, stressing the importance of submitting the right specimens to validate trademark use. The conversation highlights the distinctions between affiliate marketing and direct retail services, emphasizing the need for clear evidence in trademark applications to avoid rejections. Tune in for vital insights on navigating the trademark landscape!

In Blue Mountain Holdings v. Bliss Nutraceuticals, the 11th Circuit upheld a U.S. District Court finding that Lighthouse Enterprises issued a naked license to Blue Mountain, which covered the trademark in question. Scott Hervey and Eric Caligiuri discuss this case and how to avoid bearing the risks of a naked license in this featured episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: The trademark dispute in Blue Mountain Holdings versus Blitz Nutraceuticals ended with the 11th Circuit upholding the finding by the US. District Court for the Northern District of Georgia that Lighthouse Enterprises had issued a naked license to Blue Mountain, which covered the trademark that was the basis for the dispute. We’re going to talk all about the naked license on this installment of The Briefing by Weintraub Tobin. Thanks for joining us today. My name is Scott Hervey. I’m joined by my colleague, Eric Caligari. Eric, thanks for joining us today. Eric: Thanks for having me, Scott. Scott: Eric, can you give us some background on the case of Blue Mountain Holdings versus Bliss Nutraceuticals? Eric: Yes, of course. Lighthouse Enterprises and Blue Mountain Holdings initially sued Bliss in April of 2020 for federal trademark infringement, federal cybersquatting, and federal trademark dilution, along with some other claims. The lawsuit was based on their ownership of the trademark, Vivazen Botanicals claimed that had been selling Vivazen products since 2012 and registered the name as a trademark with the United States Patent and Trademark Office in 2017. Blue Mountain claimed that it acquired the Vivazen trademark and a 2019 purchase agreement with Lighthouse. Bliss claimed that this purchase agreement was really a license. The district court agreed with Bliss and found that the purchase agreement was really a license and that this license became a naked license when Lighthouse failed to police Blue Mountain’s use of the trademark. This resulted in the abandonment of Lighthouse’s rights in the trademark, and the 11th Circuit upheld the district court’s findings. Scott: While this case itself is very interesting, and it’s probably far from being over, what I want to focus on today is the ramifications of the court’s finding that the transaction between Lighthouse and Blue Mountain was a naked license. A naked license refers to a situation where a trademark owner grants permission to another party to use a trademark, and that trademark owner does not maintain proper control over the quality and nature of the goods or services associated with that trademark. In other words, it’s a license that lacks the necessary safeguards to ensure that the trademark’s reputation and distinctiveness are maintained. The nakedness of a license isn’t judged by whether the licensor allows product quality to suffer. It’s whether the license or is keeping an eye on product quality, and whether, in other words, it has abandoned quality control or not. If it has, the license is naked and the trademark is abandoned. Eric: Yeah, and if a trademark is abandoned, whatever rights the mark owner may have had in the mark are also abandoned. It’s quite a serious situation and result to avoid. Scott: I agree. And given this, let’s talk about how to avoid the granting of a naked license. Eric: Yeah, sure. Well, first of all, when entering into a license agreement, that agreement should be in writing, and the right agreement should fully outline the terms and conditions that the licensee must adhere to. These terms should include provisions such as quality control and the consequences of failing to meet those quality control standards. Scott: And it’s not enough that the agreement includes proper quality control language; but it’s imperative that the trademark owner actually exercise proper control over the products or services that are associated with the trademark. This can include setting quality standards, providing guidelines, and periodically inspecting the products or services to ensure that they meet those standards. This was emphasized by the 11th Circuit’s ruling, in which it noted that the record in the case showed that Lighthouse engaged in no meaningful supervision or inspection of the products bearing the Vivazen mark. Eric: And in exercising its quality control rights. It’s also important that there be consequences if the mark owner abjures any deviations from the agreed-upon quality standards and tries to enforce those consequences to make sure that they’re being adhered to. Scott: Agreed. The licensing agreement should include a clause that allows the license or to terminate the license if the licensee fails to meet the agreed-upon quality standards or breaches other terms of the agreement. Eric: Agreed. And thanks for bringing this case to our attention for highlighting the pitfalls of the naked license and ways to try to avoid that outcome. Scott: Absolutely, Eric. Eric: Well, that about wraps it up here. Thanks for joining us on the briefing. By Weintraub Tobin. Hope you enjoyed today’s episode. Please remember to subscribe to our podcast and to our YouTube channel.

Weintraub attorneys Scott Hervey and Jessica Marlo explore the US Olympic Committee’s lawsuit against Prime Hydration, co-founded by Logan Paul, for using Olympic trademarks in their ad campaign with Kevin Durant. Discover the power of Olympic trademarks and their protection! Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here. Show Notes: Scott The United States Olympic and Paralympic Committee has filed a lawsuit in the United States District Court for Colorado against Prime Hydration, a sports drink company co-founded by social media influencer Logan Paul. The complaint alleges that Prime Hydration’s ad campaign featuring NBA star and Team USA member Kevin Durant infringes numerous Olympic trademarks. I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague and huge Olympic fan, Jessica Marlo. We are to talk about this case and the unique aspects of Olympic trademarks in this installment of “The Briefing.”   Jessica, welcome back to “The Briefing.”   Jessica Thank you for having me.   Scott Jessica, I know your absolute fascination with the Olympics runs deep, so I thought this would be a fantastic topic to discuss with you.   Jessica Absolutely. This is the perfect marriage of all of my favorite things. Having been a gymnast, going to the Olympic Gymnastics Trials every four years and working in the brand and licensing space, this is everything bundled into one. So I’m very excited to talk about this.   Scott The trifecta. The gold, the gold medal, as they say. We’re about halfway into the Paris Olympics, but this lawsuit was filed just before the Paris Olympics started. But let me give you a little background on the Olympic trademarks. Under the Ted Stevens Olympic Amateur Sports Act, Congress granted the USOPC, exclusive ownership of certain Olympic-related words and symbols, including the name United States Olympic Committee, the words Olympic, Olympian, going for the Gold, Team USA and the International Olympic Committee’s symbol of the five interlocking rings. The act also permits the USOPC to authorize its contributors suppliers to use these Olympic-related words and symbols, and it also allows the USOPC to initiate lawsuits to address unauthorized uses. The USOPC’s rights are strong, and they were acknowledged as such by the Supreme Court in San Francisco Arts and Athletics versus the United States Olympic Committee, which involved a suit to injoin San Francisco Arts and Athletics use of Gay Olympic Games.   The Court noted that the legislative history demonstrated that Congress intended to provide the USOPC with an absolute monopoly over the use of the word Olympic. It doesn’t matter whether any unauthorized use of the word tends to cause confusion or not. All uses by parties other than the USOPC and those they authorize are prohibited, absolutely prohibited. Third-party marks that contain the designated Olympic-related words or symbols or any combination thereof cannot be registered on either the principle or the supplemental register, and nor can that matter be disclaimed. Those marks must be refused registration by the US Patent and Trademark Office on the grounds that the mark is not in lawful use in commerce. The US Olympic Trademark rights, they’re stronger than normal trademark rights, as you can see.   Jessica Absolutely. The USOPC and its international counterpart, the IOC, are extremely diligent in protecting the Olympic marks, and this is all driven by revenue generated from sponsors. So Olympic sponsorships are the second biggest revenue source for the IOC right behind its broadcast rights. Sponsors pay hundreds of millions of dollars to be the exclusive sponsors of the Olympic Games, and Olympic organizers are required to make sure no one gets a free ride.   Scott That’s right. And with the 2024 Paris Olympic Games underway, it’s no surprise that the USOPC is stepping up its enforcement activity. Actually, they stepped it up prior to the Olympic Games. With regard to prime hydration, the product packaging for its Kevin Durant collaboration shows use of the USOPC mark, Olympic, Olympian, Team USA, and going for gold. Ad copy for the product refers to the product as the, “Kevin Durant Olympic Prime Drink”. Let’s have our producer put up the drink can graphic on the screen here. You can see quite a number of references to Olympic trademarks and trademarks that are protected and owned exclusively by the USOPC. The USOPC claims that prime hydration failed to cease use of these Olympic marks after the USOPC sent Prime a cease and assist letter.   Jessica Wow. Well, Coca-Cola has a license deal with the USOPC that gives it the exclusive use of Olympic trademarks, including Olympic and Team USA, for its beverages in the United States. The USOPC says that the license fee Coca-Cola pays for this right is significant. Understandably so. Clearly, a significant component of value is exclusivity. In its complaint against Prime Hydration, the USOPC argues that the revenue from being able to grant exclusivity, this revenue which is vital to the funding and the training and entering of US teams for the Olympic, Paralympic, Youth Olympic, Pan-American, and Parapan-American Games, is threatened when individuals and organizations use the USOPC trademarks without authorization.   Scott That’s right. The complaint that was filed against Prime Hydration alleges a violation of the Ted Stevens Olympic and Amateur Sports Act, various violations of the Lanham Act, and a violation of the Colorado consumer protection laws and unfair competition laws. The complaint seeks damages, and it includes a claim for trouble damages and punitive damages and an injunction. But interestingly, I did not see on a docket, it might have been that I missed it, but I did not see on a docket a motion for a TRO, a temporary restraining order, which is odd given that these types of infringements, especially when time is of the essence, they’re usually partnered with a TRO.   Jessica That’s interesting. What we’ve learned, if nothing else, is that you don’t touch the Olympic trademarks. The USOPC and its international counterpart, the IOC, will come after you swiftly and aggressively. It’s understandable when we’re talking about the money that’s coming from the licensing of these marks and how it really helps fund the training of these athletes and entering into the games. I mean, that’s something that really needs to be protected for the success of the country as it relates to its participation in any of the various Olympic, Paralympic, Youth, Olympic, Pan-American and Pan-American Games.   Scott Absolutely. What I’m surprised over or with is that nobody flagged these issues to Prime Hydration. No one on Kevin Durant’s team, which I assume had approval over the product and ad copy. Nobody within Prime Hydration, none of its distributors. It just seems odd that everybody was asleep at the wheel here. But nonetheless, I think my expectation is that this will settle. I don’t think that we’re going to see any further action in the case itself. But if we do, we’ll be certain to- We’ll be back. Give you an update for sure. Jessica, thanks. Thanks for joining us. Is there anything that you want to say before we wrap this up?   Jessica Go Team USA!   Scott That’s what I thought. Thanks again for joining us.   Jessica Thank you.   Scott Thank you for listening to this episode of “The Briefing.” We hope you enjoyed the episode. If you did, please remember to subscribe. Leave us a review and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.

Tracy Anderson, the mastermind behind the Tracy Anderson Method, sued ex-trainer Megan Roup for allegedly stealing her routines and licensing them to Equinox. The US District Court just ruled against Anderson’s copyright claim. Join Scott Hervey and Jamie Lincenbergfrom Weintraub Tobin on “The Briefing” as they discuss the case’s impact on fitness entrepreneurs. Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.   Show Notes: Scott Exercise is a multi-million-dollar business, and nobody knows that better than Tracy Anderson, celebrity fitness trainer and creator of the Tracy Anderson Method. The Tracy Anderson Method is a fitness routine that combines choreography, fitness, and cardiovascular movement, and it served as the foundation for multiple exercise studios and 19 home videos. Anderson sued one of her former trainers, Megan Roup, for ripping off her routines to create her own choreography-based dance cardio workout, which Roup later licensed to rival gym chain Equinox Holdings. The US District Court for the Central District of California recently ruled on Rupp’s motion for summary judgment, denying Anderson’s relief on her copyright claim. I’m Scott Hervey from Weintraub Tobin, and I am joined today by Jamie Lincenberg. We’re going to talk about exercise routines and copyright and what this case means for celebrity trainers and fitness entrepreneurs in this next installment of “The Briefing.” Jamie, welcome back to “The Briefing.”   Jamie Thanks, Scott. It’s Good to be here and to get into this case. I’ve actually done the Tracy Anderson method and Megan Roup’s classes.   Scott That’s great. That’s great. You speak from first-hand experience, so this is great. Exactly. All right, so let’s talk about the cases. The facts are fairly straightforward. Anderson is a fitness trainer who developed the Tracy Anderson method. She has studios in LA, New York, Madrid, London, and she’s got merch, lots and lots of merch. She has truly built a fitness empire. Roup was a trainer in a Tracy Anderson gym from about 2011 to 2017. And Roup signed a trainer agreement upon her employment, which contained a mostly standard confidential information provision, which identified workouts, movements, exercise, routines, exercise formulas, nutrition advice, content, sequences, dances, muscular structure, work, and equipment as being, “confidential information”. After Roup left Anderson’s employment, she founded TSS, another choreography-based dance cardio workout.   Jamie Two weeks after terminating her employment with Tracy Anderson in February 2017, Roup sent emails to potential clients, including clients of Anderson’s, announcing her development of TSS, her choreography-based dance cardio workout. In March 2017, Roup announced on social media her launch of TSS, equals Equinox licensed TSS from Roup, and while working with Equinox, Roup prepared an instructor training manual for TSS, which Anderson alleges included much of the same information contained in Anderson’s confidential training materials.   Scott So after some initial law in motion, Anderson’s remaining claims were whittled down to copyright infringement and breach of contract. Roup then moved for summary judgment on both of those remaining claims. So as to the copyright claim, Anderson asserted that Roup infringed on the copyrights Anderson has in her home videos since the videos copy the choreography, movements, sequences, and the routines from the videos. Anderson is in arguing that Roup copied the home videos themselves, but that she copied the underlying routines that are captured on the footage. Anderson believes that the copyrights in the home videos extend to the routines that are captured in the home videos.   Jamie So, Roup didn’t dispute the similarity between hers and Anderson’s exercise dance routine. However, she does argue that Anderson can’t prove its copyright claim because Anderson’s underlying exercises in the videos are non-copyrightable under the Ninth Circuit case of Bikram’s Yoga College of India versus Evaluation Yoga.   Scott In Bikram, Bikram Choudhury developed and popularized The Sequence, which is a series of 26 yoga poses and two breathing exercises. He published a book that included descriptions, photographs, and drawings of the sequence. After, the two defendants participated in his yoga teacher training courses, and then they started a competing company that used the sequences in their yoga classes. Choudhury sued for copyright infringement. The Ninth Circuit held that the sequence was a system designed to yield physical benefits and a sense of well-being and a healing methodology which is not eligible for protection by copyright. As a result, the copyright protected only the expression of this idea, meaning the words in the pictures used to describe the sequence in his book, and not the idea of the sequence itself. In other words, Choudhury’s copyright in his book did not extend to protect the sequence itself, meaning the 26 yoga poses and two breathing exercises.   Jamie Anderson tried to argue that the routines are protectable choreography under the Ninth Circuit’s holding in Hanagami verse Epic Games. Hanagami involved a claim by a YouTube dancer based on the video game creator’s use of Shortbit from one of Hanagami’s dances in the video game Fortnite. In Hanagami, the Ninth Circuit adopted the US Copyright Office’s definition of choreography, which isn’t really a bright-line definition. According to the US Copyright Office, a choreographic work contains one or more of the following elements. Rhythmic movements of one or more dancer’s bodies in a defined sequence and a defined spatial environment, such as a stage, a series of dance movements or patterns organized into an integrated, coherent, and expressive compositional whole, a story, theme, or abstract composition conveyed through movement, a presentation before an audience, a performance by skilled individuals, or musical or textual accompaniment.   Scott Wow, Jamie, you weren’t kidding when you said that the Copyright Office office’s definition of choreography isn’t really a bright-line definition. The Copyright Office, while they gave us this generalized idea of what is choreography, they did give us some bright-line guidance here that was applicable to Anderson’s case. They did say that general exercise routines and athletic activities are not protectable choreography. I think the Anderson court could have stopped there. However, the court decided to create a new two-step analysis to navigate between Bikram and Haganami. So in determining whether Anderson’s routines are copyrightable or not, or whether anybody’s routines are copyrightable or not, at least in the central district and probably under the Ninth Circuit, plaintiff must first establish that the work is a copyrightable expression as opposed to unprotectible ideas, processes, or systems. And then, if the work is copyrightable, show that the dance rises to the level of protectable choreography under the Copyright Act. Now, with regard to Anderson’s routines, the Court found them to be an unprotectible process, system, and/or methodology. And although Anderson’s process was original and the result of substantial investment of time, the Court decided it could not be protected as copyright.   Jamie Right. So although the Court dismissed Anderson’s copyright claim, it did not, however, dismiss Anderson’s claim that Roup was in breach.   Scott Yeah, that’s right. The court found evidence that Roup sent out emails announcing her competing fitness program, The clients of Anderson’s, making use of Anderson’s client list and client information, and that this created a disputed issue of fact as to whether the client information constitutes confidential information and whether Roup used it, thereby breaching her employment agreement.   Jamie So, Scott, what can we learn from this? What’s the takeaway? Was there any chance that Anderson’s routines could have been characterized as protectable choreography?   Scott Well, the court does point out that Anderson refers to her routine as a method in many places. The court cites too many references by Anderson to the Tracy Anderson Method and to it being a fitness methodology. But even if there hadn’t been so many references to the routines as a method. As I think, as I mentioned above, the US Copyright Office said that exercises are excluded from being copyrightable. So I don’t think that Anderson could have prevailed on her copyright claim. However, Anderson’s breach of contract claim does seem strong. And that seems to be one lesson here: the value of a very strong confidentiality agreement.   Jamie Thanks, Scott. That’s really interesting. And I’m glad you brought this case to our attention.   Scott Yeah, we’ll keep track as this goes through the court if there’s any further movement on her breach contract claim. But I’m assuming the parties are probably going to settle, so we’ll see.   Jamie Thanks for listening to this episode of “The Briefing.” We really hope you enjoyed the episode. And if you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please make sure to leave us a comment.

Weintraub attorneys Scott Hervey and Jamie Lincenberg discuss the US radio royalty loophole where non-songwriter performers and labels receive no royalties. They explore the push for the American Music Fairness Act to change this, highlighting disparities in royalty payments and proposed legislation.